Ex Parte Suciu et al

Patent Trial and Appeal Board

Nov 14, 2013

11718420 (P.T.A.B. Nov. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/718,420 05/02/2007 Gabriel L. Suciu 67097-071PUS1;11151 6321
54549 7590 11/14/2013
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
EASTMAN, AARON ROBERT
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
11/14/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GABRIEL L. SUCIU, BRIAN MERRY,
and LAWRENCE PORTLOCK
____________________

Appeal 2011-013650
Application 11/718,420
Technology Center 3700
____________________

Before: JOHN C. KERINS, PHILLIP J. KAUFFMAN, and
JILL D. HILL, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/718,420

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-3 and 5-16. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

The Invention
Appellants’ claimed invention “relates to a tip turbine engine, and
more particularly to a non-rotating compartment located along an engine
centerline.” Spec. 1:6-7. Claims 1 and 12 are the independent claims on
appeal. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A tip turbine engine comprising:
a tip turbine engine which intakes an airflow traveling in
a first direction, radially turns the airflow then exhausts the
airflow in the first direction to generate thrust, the tip turbine
engine having a nonrotatable support structure mounted about
an engine centerline, said nonrotatable support structure defines
a non-rotating compartment formed along said engine
centerline; and
a lubricating fluid system within said non-rotating
compartment.

The Rejections and Evidence Relied Upon
The following rejections are before us on appeal:
I. Claims 12 and 13 under 35 U.S.C. § 102(b) as anticipated by M.A.N.
(DE 1173292; pub. Jul. 2, 1964).
II. Claims 1-3 and 5-8 under 35 U.S.C. § 103(a) as unpatentable over
M.A.N. and Benz (GB 905,136; pub. Sept. 5, 1962).
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III. Claims 9-11 under 35 U.S.C. § 103(a) as unpatentable over M.A.N.,
Benz, and Hadaway (US 5,107,676; iss. Apr. 28, 1992).
IV. Claims 14-16 under 35 U.S.C. § 103(a) as unpatentable over M.A.N.
and Hadaway.

OPINION
Each of the rejections before us on review relies at least in part on
M.A.N. Appellants argued that the Examiner had not produced an English
translation of this reference (App. Br. 4), following which the Examiner
provided a machine translation with the Examiner’s Answer (Ans. 8-9).
Appellants acknowledge the machine translation dated June of 2011, but
argue that it is not prior art. Reply Br. 1 (citing Manual of Patent Examining
Procedure (MPEP) § 706.02).
The rejection does not rely upon the machine translation (Ans. 8-11);
rather, it relies upon the drawings of the German language version of the
reference (Ans. 4-8; see also Office Action dated Jan 12, 2011, at 2-6).1
Because the machine translation is not relied upon, we need not decide if the
machine translation is prior art.2 We evaluate the rejections before us based
upon the figures of M.A.N. as relied upon by the Examiner.

1 The Examiner correctly notes that non-English language information, such
as drawings, may be considered. Ans. 9; MPEP § 609.04(a) II.(D).
2 We note that failure to provide a translation is a petitionable matter. See 37
C.F.R. § 1.81; see generally Ex Parte Orbital Technologies Corp., 2013 WL
1289496 (PTAB 2013).
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I. Claims 12 and 13 as anticipated by M.A.N.3
Independent claim 12 is directed to a tip turbine engine that includes a
non-rotatable support structure having an inner static support housing and an
outer static support housing defining a non-rotating compartment.
Appellants present two arguments against the rejection of claim 12.
First, Appellants argue that because the Examiner did not provide an
English translation of M.A.N., the Examiner is only speculating that the
reference discloses tip turbine engine type flow. App. Br. 5-6. However,
the Examiner found, and Appellants do not contest, that the International
Preliminary Report on Patentability supplied by Appellants states that
M.A.N. discloses a tip turbine engine (and by implication tip turbine engine
type flow). Ans. 9; Reply Br. 1-4; see also Ex Parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (the BPAI “reviews the obviousness
rejection[s] for error based upon the issues identified by appellant, and in
light of the arguments and evidence produced thereon,” and treats arguments
not made as waived).
Second, Appellants argue that if M.A.N.’s shaft 12 is indeed a shaft, it
would create flow effects around it that would prevent M.A.N.’s non-
rotatable compartment from being filled with a liquid such as a lubricating
medium. App. Br. 6. Claim 12 does not call for a lubricating fluid system
within the non-rotating compartment.4 Therefore, Appellants’ argument is

3 Appellants argue claims 12 and 13 as a group, and we select claim 12 as
representative. App. Br. 5-6; Reply Br. 2; see 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
4 Compare to independent claim 1. App. Br. 11, Claims App’x, Claim 1.
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unconvincing because it is not commensurate in scope with claim 12.5 App.
Br. 12, Claims App’x, Claim 12.
As such, Appellants fail to apprise us of error in the rejection of
claims 12 and 13.

II. Claims 1-3 and 5-8 as unpatentable over M.A.N. and Benz
The Examiner found that M.A.N. discloses the tip turbine engine of
claim 1 except for a lubricating fluid system within the non-rotating
compartment. Ans. 5. The Examiner found that Benz discloses a lubricating
fluid system within a non-rotating compartment, and concluded that it would
have been obvious to modify M.A.N. “by adapting it to house a lubricating
fluid system as taught by Benz for the purposes of lubricating the apparatus
and in order to reduce the friction.” Ans. 5-6.
Appellants challenge the rationale for this proposed combination by
arguing that it is unclear how M.A.N. operates: perhaps M.A.N. already has
an auxiliary lubrication system and would not need an additional one as
proposed, or perhaps M.A.N. is not in need of lubrication at all. App. Br. 7.
The Examiner does not indicate, nor do we discern anything in
M.A.N’s Figures 1 and 2 that teaches the presence or absence of a
lubricating fluid system within the non-rotating compartment (the
compartment that houses elements 3, 14, and 15). See Ans. 5. Further,
because the Examiner chose to rely upon the drawings alone, we have no
further information regarding M.A.N.’s lubrication system or its need for
such a system. See Ans. 9. In light of this, the Examiner has not articulated

5 Appellants also argue that the Examiner does not address this argument.
Reply Br. 2. The Examiner’s failure to address this unpersuasive argument
does not apprise us of error in the rejection.
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reasoning with some rational underpinning to support the legal conclusion of
obviousness.
As such, we do not sustain the rejection of independent claim 1 and its
dependent claims 2, 3, and 5-8.

III. Claims 9-11 as unpatentable over M.A.N., Benz, and Hadaway
Claims 9-11 depend from independent claim 1. This rejection suffers
from the same shortcoming at that explained in the analysis of Rejection II,
above. See Ans. 7 (relying upon the findings of claim 1); App. Br. 9
(repeating the arguments used against Rejection II). Consequently, we do
not sustain the rejection of claims 9-11.

IV. Claims 14-16 as unpatentable over M.A.N. and Hadaway
The Examiner concluded that it would have been obvious to modify
M.A.N. to reach the subject matter of claims 14-16 based upon the teachings
of Hadaway “for the purposes of lubricating the gears and bearings.” Ans.
8. Our analysis of such rationale in Rejection II above is equally applicable
here. See App. Br. 10. As such, we do not sustain the rejection of claims
14-16.

DECISION
I. We affirm the Examiner’s decision to reject claims 12 and 13 under
35 U.S.C. § 102(b) as anticipated by M.A.N.
II. We reverse the Examiner’s decision to reject claims 1-3 and 5-8 under
35 U.S.C. § 103(a) as unpatentable over M.A.N. and Benz.
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III. We reverse the Examiner’s decision to reject claims 9-11 under 35
U.S.C. § 103(a) as unpatentable over M.A.N., Benz, and Hadaway.
IV. We reverse the Examiner’s decision to reject claims 14-16 under 35
U.S.C. § 103(a) as unpatentable over M.A.N. and Hadaway.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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